DCT
1:23-cv-00771
Nike Inc v. Lululemon USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nike Inc (Oregon)
- Defendant: Lululemon Athletica Inc (Nevada)
- Plaintiff’s Counsel: Arnold & Porter Kaye Scholer LLP
- Case Identification: 1:23-cv-00771, S.D.N.Y., 01/30/2023
- Venue Allegations: Plaintiff Nike alleges venue is proper because Defendant Lululemon maintains a regular and established place of business in the Southern District of New York and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Chargefeel, Blissfeel, and Strongfeel footwear lines infringe three patents related to its Flyknit technology for manufacturing textile footwear uppers.
- Technical Context: The patents relate to advanced methods of knitting footwear uppers that allow for the creation of complex, functionally-zoned textiles from a single manufacturing process, a key area of innovation in the athletic footwear market.
- Key Procedural History: The complaint asserts U.S. Patent No. 8,266,749, which previously survived an Inter Partes Review (IPR) proceeding (IPR2016-00922). In that proceeding, the U.S. Patent and Trademark Office confirmed the patentability of asserted claim 1, among others, over an invalidity challenge.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-03 | Earliest Priority Date for U.S. Patent No. 8,266,749 |
| 2006-11-10 | Earliest Priority Date for U.S. Patent No. 9,730,484 |
| 2012-09-18 | U.S. Patent No. 8,266,749 Issues |
| 2014-09-30 | Earliest Priority Date for U.S. Patent No. 9,375,046 |
| 2016-04-19 | Inter Partes Review (IPR2016-00922) filed for '749 Patent |
| 2016-06-28 | U.S. Patent No. 9,375,046 Issues |
| 2017-08-15 | U.S. Patent No. 9,730,484 Issues |
| 2023-01-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,266,749 - “Article Of Footwear Having A Textile Upper,” issued September 18, 2012
The Invention Explained
- Problem Addressed: Traditional footwear manufacturing is described as an inefficient process that involves assembling uppers from multiple, separate materials (e.g., leather, textiles, foam), which requires coordinating numerous suppliers and can limit the breathability of the final product (’749 Patent, col. 3:5-24).
- The Patented Solution: The patent discloses a method where a single, unitary textile element is created on a knitting machine. The machine is programmed to vary the stitch types and/or yarns to create areas with different textures, patterns, or physical properties within that single element (’749 Patent, col. 8:35-41). This element is then removed from the larger textile structure it was knitted on and incorporated into a footwear upper, streamlining the manufacturing process (’749 Patent, Abstract).
- Technical Importance: This manufacturing method enables the creation of functionally zoned uppers from a single textile piece, reducing material waste, manufacturing complexity, and potentially the weight of the shoe compared to traditional cut-and-sew techniques (’749 Patent, col. 11:1-9).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶20).
- The essential elements of independent claim 1 are:
- A method of manufacturing an article of footwear, comprising:
- simultaneously knitting a textile element with a surrounding textile structure, where the textile element has at least one knitted texture that differs from the texture in the surrounding structure;
- removing the knitted textile element from the surrounding structure; and
- incorporating the knitted textile element into the article of footwear.
U.S. Patent No. 9,375,046 - “Article Of Footwear Incorporating A Knitted Component With Inlaid Tensile Elements And Method Of Assembly,” issued June 28, 2016
The Invention Explained
- Problem Addressed: The use of numerous different material elements in conventional uppers increases manufacturing waste and can make the resulting product more difficult to recycle (’046 Patent, col. 2:1-9).
- The Patented Solution: The patent discloses a knitted component made of a unitary construction that features two primary structures: "webbed areas" and adjacent "tubular rib structures" (’046 Patent, Abstract). The webbed areas are designed to be compact in a neutral state but can stretch to reveal a previously hidden underlying area. The tubular structures provide channels that can house tensile elements (e.g., cables) to offer targeted support (’046 Patent, col. 7:1-14; col. 13:58-61).
- Technical Importance: This technology creates a dynamic textile that provides both engineered stretch and targeted, cable-integrated support, while also enabling novel aesthetic effects where colors or textures are revealed only when the material is stretched (’046 Patent, col. 8:35-51).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶28).
- The essential elements of independent claim 1 are:
- An article comprising:
- a plurality of webbed areas configured to move between a biased neutral position and an extended position;
- a plurality of adjacent tubular structures;
- wherein at least one of the areas or structures is configured to stretch to move the webbed areas to the extended position;
- wherein in the neutral position, a first area of the front surface is hidden from a first viewing perspective; and
- wherein in the extended position, the first area of the front surface is revealed for visual observation.
Multi-Patent Capsule: U.S. Patent No. 9,730,484
- Patent Identification: U.S. Patent No. 9,730,484, “Article of Footwear Having a Flat Knit Upper Construction or Other Upper Construction,” issued August 15, 2017.
- Technology Synopsis: This patent describes an article of footwear and a method for making it using a flat-knitting process. The process creates a textile element that includes a "domed, three-dimensional structure" configured to extend over the top of a foot, formed as a unitary construction with first and second side portions (’484 Patent, Abstract). The key is that this domed structure is shaped to extend above the plane of the side portions when the element is in a flattened configuration, allowing a 3D part to be created directly from a flat-knitting process (’484 Patent, col. 13:5-21).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶35).
- Accused Features: The complaint alleges that the uppers of the accused footwear, such as the Chargefeel Mid, comprise a flat-knitted element with a central portion having a domed, three-dimensional structure configured for extending over the top of a foot (Compl. ¶36).
III. The Accused Instrumentality
- Product Identification: The Lululemon Chargefeel Mid, Chargefeel Low, Blissfeel, and Strongfeel footwear products are identified as the "Infringing Products" (Compl. ¶14).
- Functionality and Market Context: The complaint alleges these are footwear products with textile uppers that embody the patented inventions (Compl. ¶13). The complaint provides photographic examples of the accused products, such as the Lululemon Chargefeel Mid, which features an upper constructed from a knit textile with varied textures (Compl. p. 3). The products are allegedly sold and offered for sale throughout the United States via Lululemon's e-commerce website and retail stores (Compl. ¶15). The complaint does not provide further detail for analysis of specific technical operations beyond alleging that they are manufactured by and/or incorporate the features of the asserted claims.
IV. Analysis of Infringement Allegations
'749 Patent Infringement Allegations
The complaint alleges infringement of this method patent under 35 U.S.C. § 271(g), based on the importation into the U.S. of products made by the patented process (Compl. ¶21).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| simultaneously knitting a textile element with a surrounding textile structure, the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure; | The complaint alleges on information and belief that Lululemon manufactures (or has manufactured for it) the accused shoes using a process that includes this step, creating a textile element with a different texture from its surrounding structure. The complaint includes a picture of the Chargefeel Mid shoe, which shows a knit upper with varying textures (Compl. p. 3). | ¶21 | col. 8:35-41 |
| removing the knitted textile element from the surrounding knitted textile structure; | The complaint alleges on information and belief that the manufacturing process includes removing the distinct knitted textile element from the larger textile structure on which it was formed. | ¶21 | col. 8:4-7 |
| incorporating the knitted textile element into the article of footwear. | The complaint alleges on information and belief that the manufacturing process includes incorporating the removed textile element into the final footwear product. | ¶21 | col. 6:35-39 |
- Identified Points of Contention:
- Process Questions: The infringement allegation for the ’749 Patent is made "on information and belief" and relies on § 271(g) (infringement by importation). A central issue will be evidentiary: what proof can Nike obtain in discovery about the specific manufacturing processes used, likely overseas, for the accused products?
- Scope Questions: The case may turn on the definition of the claimed process. For example, does a "knit-to-shape" process, which seeks to create a finished component with minimal waste, constitute "simultaneously knitting a textile element with a surrounding textile structure" and then "removing" it, or does the claim require knitting a defined shape onto a larger, sacrificial roll of fabric?
'046 Patent Infringement Allegations
The complaint alleges direct infringement of this product patent under 35 U.S.C. § 271(a) (Compl. ¶29).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of webbed areas that include a plurality of courses formed from a first yarn, the webbed areas ... configured to move between a neutral position and an extended position... | The complaint alleges the accused products, such as the Chargefeel Mid, are articles that contain these webbed areas. | ¶29 | col. 7:45-51 |
| a plurality of tubular structures that are adjacent to the webbed areas, the tubular structures including a plurality of courses; | The complaint alleges the accused products contain these tubular structures adjacent to the webbed areas. | ¶29 | col. 7:10-14 |
| wherein at least one of the webbed areas or tubular structures is configured to stretch to move the webbed areas to the extended position in response to a force applied to the article | The complaint alleges the structures on the accused products are configured to stretch in response to force. | ¶29 | col. 8:20-25 |
| wherein in the neutral position, a first area of the front surface is hidden from visual observation... and wherein in the extended position, the first area of the front surface is revealed... | The complaint alleges that in a neutral state, a first area of the front surface of the webbed areas is hidden, and that this area is revealed when the article is stretched. | ¶29 | col. 12:41-57 |
- Identified Points of Contention:
- Technical Questions: A key dispute will likely concern whether the structures on the accused shoes meet the functional limitations of the claims. For example, do the knit elements that Nike identifies as "tubular structures" actually have the hollow, tube-like construction described in the patent?
- Functional Questions: What evidence does the complaint provide that stretching the accused product's upper "reveals" a "hidden" surface, as required by the claim? The infringement analysis will likely depend on expert technical evaluation of how the accused products are constructed and how they behave under force.
V. Key Claim Terms for Construction
'749 Patent: "simultaneously knitting a textile element with a surrounding textile structure"
- The Term: "simultaneously knitting a textile element with a surrounding textile structure"
- Context and Importance: This term defines the core manufacturing act. Its construction is critical because infringement hinges on whether the process used to make the accused products falls within this definition. Practitioners may focus on this term because the distinction between knitting a discrete element within a larger sheet of fabric (which is then removed) and a modern "knit-to-shape" process that produces a final component directly could be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses that "differences in the stitches within textile structure 60 form an outline with the shape and proportions of textile element 40," suggesting the "textile element" is defined by its properties within a larger knitted piece (’749 Patent, col. 8:37-41).
- Evidence for a Narrower Interpretation: The claim requires a subsequent step of "removing the knitted textile element from the surrounding knitted textile structure." This may support a narrower reading where the "surrounding textile structure" is distinct, sacrificial material, a feature that might be absent in a highly efficient knit-to-shape process.
'046 Patent: "tubular structures"
- The Term: "tubular structures"
- Context and Importance: The presence of this claimed feature in the accused products is a cornerstone of the infringement allegation. The construction of "tubular" will determine whether the multi-layered knit elements on Lululemon's shoes meet the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the structures as including a "plurality of courses" and being "adjacent to the webbed areas" (Claim 1). The specification notes they are formed of "two or more co-extensive and overlapping knit layers" (’046 Patent, col. 7:10-14), which a plaintiff could argue covers a range of layered knit formations.
- Evidence for a Narrower Interpretation: The specification repeatedly describes these structures as forming a "hollow tube," a "tunnel," or a "channel" capable of receiving an inlaid "tensile element" like a cable (’046 Patent, col. 9:1-3; col. 13:58-61). A defendant may argue that a structure that is merely layered but does not form a distinct and functional "tunnel" fails to meet the claim's requirement when read in light of the specification.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the '749 patent will be one of process evidence: can Nike, through discovery, produce evidence that the foreign manufacturing process used for the accused footwear meets every step of the asserted method claim, moving the allegation beyond "information and belief" to factual proof?
- A key question for the '046 and '484 patents will be one of technical and functional scope: do the knit elements on the accused Lululemon shoes actually possess the specific structural and functional properties required by the claims—such as being "tubular structures" that hide and reveal surfaces ('046 patent) or a "domed" element that extends above a flattened plane ('484 patent)—or is there a material difference in their technical construction and operation?
- A third overarching question will be one of validity in light of prior art: although claim 1 of the '749 patent has survived an IPR challenge, the validity of all asserted claims across all three patents will likely be challenged with different combinations of prior art, raising the question of whether Lululemon can identify prior art that teaches the claimed inventions.